Before you apply

Before applying for trade mark protection, you should make sure that you meet the eligibility requirements.

Are you eligible?

When you apply for a trade mark, the owner must be one of the following:

an individual
a company
an incorporated association
a combination of these

A business name or trading name is not acceptable as the name of the applicant. The owner(s) of the business registration would be the applicant. If your trade mark is owned by a corporation, the application should be made in the corporation's name and not in the name of directors or shareholders. A trust is to apply in the name of the trustees.

An association, whether incorporated or not, may apply for a collective trade mark.

You must use, or intend to use, the trade mark in relation to the goods or services included in the application.

If the trade mark is to be used by a corporate entity that is about to be formed, the applicant will need to assign the trade mark to the new body once it has been formed.

Is your trade mark likely to be accepted?

Before you apply for a trade mark registration, make sure your trade mark is unlikely to conflict with another trade mark. Conduct a search of the Australian Trade Mark Online Search System (ATMOSS) and other goods and services existing in the market place to ensure that you will not be infringing any existing trade marks.

Our TM Headstart service provides an assessment that can help you determine the suitability of your proposed trade mark for registration. This service can help you overcome difficulties meeting the requirements for registration of your trade mark.

Will your trade mark be accepted for registration?

Your trade mark must distinguish your goods or services from others in the marketplace. For this reason, you will find it difficult to register trade marks that fall into the following categories as these are prohibited signs:

denote the kind, quality, intended purpose or value of the goods or services
are common surnames or geographical names
conflict with an earlier trade mark
would mislead the public about the nature of the goods or services

Some words, such as 'Olympic Champion' are protected by law and cannot be registered as a trade mark under the Trade Marks Act 1995. Other words are affected by other legislation, such as the use of the word 'champagne', which is governed by provisions of the Australian Wine and Brandy Corporation Act 1980.

Geographical names and surnames

A geographic name or popular surname is difficult to register, unless it has been used extensively and for a long period of time.

One of the basic tests in examination is whether the proposed trade mark is a term that other traders will have a legitimate need to use to describe their own goods or services.

Geographical names

Geographical names are likely to be terms other traders have a legitimate need to use. This is usually because the name refers to the geographic origin of the goods or service.

This can be especially true if the geographical region is known for a particular industry, for example Young is known for cherries. It also applies on more generic goods or services, like 'Central Sydney Couriers' for a courier service.

Surnames

Other traders with the same surname will have a legitimate need to use it on their own goods or services. This is more likely where the surname is more common.

Registering geographical names and surnames

If you can prove that your proposed trade mark has been used and is functioning as a trade mark in the marketplace you may be able to register it.

You need to prove that consumers and the public identify with this name as a trade mark, rather than a term that simply names a geographic origin or a person. You may need to do this by compiling and submitting evidence of use.